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Internet domain name expansion pushes dispute resolution cases up at WIPO

Post Time:2016-03-28 Source:ip-watch Author: Views:

The World Intellectual Property Organization has released data on disputes between trademark owners and third parties who are registering new domain names with the original brand name. Disputes are on the rise and the proportion relating to new generic top-level domain names is growing, it found. Fashion and banking are the prominent areas for disputes. 

WIPO manages the Uniform Domain Name Dispute Resolution Policy (UDRP). 

WIPO Director General Francis Gurry told 16 March press briefing that “the main thing we are measuring here is the extent to which companies are bringing cases complaining that their brands have been misappropriated by someone through the registration of a domain name.” “Of course that happens all the time,” he said. 

The WIPO Arbitration and Mediation Centre is the main means by which brand owners are able to seek redress against cybersquatting, which is the bad faith registration of someone else’s brand, he said. 

“In 2015, we saw again an increase in the number of cases,” he said. According to a WIPO press release, 2,754 cases were brought under the UDRP in 2015, an increase of 4.6 percent over the previous year. 

According to a WIPO document [pdf], most cases (2,732 – 71.71 percent) concerned the .com extension, followed by 262 cases for .net, 200 cases for .org and 81 cases for .info. 

Top Complainers: US, Europe, Fashion and Banking in the Lead 

WIPO provides services for domains such as .com. which are generic top level domains, and for country code top level domains (ccTLDs), such as .ch, Gurry said. The prominent filing countries in 2015 were the United States, France, Germany, United Kingdom, and Switzerland, he said. 

The sectors of importance were fashion; banking and finance; and internet and information technology, he said. 

According to the WIPO release, cybersquatting disputes relating to new gTLDs accounted for 10.5 percent of WIPO’s UDRP caseload in 2015. Some 24 cases concerned .club, 20 for .email, 15 for .website, and 15 for .online. 

Asked to describe the relationship between the Internet Corporation for Assigned Names and Numbers (ICANN) and WIPO, Gurry said WIPO historically has been charged with the development of a dispute resolution procedure, which was adopted by ICANN in 1998/1999. 

After this adoption, ICANN accredited a number of dispute resolution service providers, of which WIPO UDRP is one. It is the predominant one, but it is not alone, he said. 

New Domain Names Threat for Brand Owners 

Following a question from Intellectual Property Watch on the possible issues of the introduction new generic top-level domain (gTLD) names for existing trademarks, Gurry said “there is no doubt that for a brand owner, the task of surveillance of the misuse of the brand is complicated by the increase in the number of domains, or possibilities of misuse of the brand.” 

“It has become more complex for a brand owner and that is an important policy matter because at the end of the day if you are buying a virtual space and you are not seeing your vendor you have to place some reliance on the brand as the connector with the appropriate vendor.” 

Also interesting, he said, is the general evolution of domain names as identifiers. Is the multiplicity of domains going to reduce domain names as identifiers that consumers use or will are they just going to rely on browsers, he asked. 

Erik Wilbers, director of the WIPO Arbitration and Mediation Centre, said in 2015, some 10 percent of cases in the UDRP concerned new gTLDs names. However, if considering the cases received in 2016, those new gTLD cases already represents 15 percent of cases received. 

According to Wilbers, some 938 new generic top level domain names (out of the 1,400) have become operational to this date. “It is clear that with further domains yet to come, that really presents complexity issues for trademark owners in two areas,” he said. 

The first question they have to answer is in what domain will they themselves choose to register their own trademark beyond .com for example, he said. The second dilemma that they face is in terms of their trademark right enforcement budget against registration by third parties, and in which new domains they will decide to proceed. 

“Will they try to hit at every second level registration, in every new domain where their trademark is being used or abused, or will they be more focused?” he asked. 

As an example, he said one of the new top level domain is .bank. “If you are a major bank, it is obvious that if somebody tries to take your name and cybersquat that trademark in .bank, you will proceed against [that person] by filing a case because it is a direct threat to your identity on line.” 

“However, what we are finding is that trademarks are also being registered in new domains that do not strictly relate to that particular brand.” 

According to the WIPO release, “the increase in new gTLD registrations in WIPO’s caseload is anticipated to continue, in particular as new gTLDs contested at Internet Corporation for Assigned Names and Numbers (ICANN) auction, such as “.SHOP”, are yet to launch.” 

The release also explains that some “calls are being made for a next round of new gTLDs, particularly by brand owners, such as Twitter.” ICANN has started a review Rights Protection Mechanisms such as the Uniform Rapid Suspension system, and the UDRP, according to the release. 

The issue of domain names and the possible conflict with existing trademarks is a topic of discussion in the Standing Committee on the Law of Trademarks, Industrial Designs, and Geographical Indications (SCT) (IPW, WIPO, 14 November 2015). 

A group of European countries have suggested [pdf] that the UDRP rules be amended so that they allow complaints to be made concerning registration and use of domain names in violation of the protection of geographical indications and to confirm the need of the extension of UDRP to country names…”